Ex Parte Aarre

Patent Trial and Appeal Board

Feb 12, 2018

12963906 (P.T.A.B. Feb. 12, 2018)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/963,906 12/09/2010 Victor AARRE 94.0248 3798
48879 7590 02/14/2018
SCHLUMBERGER INFORMATION SOLUTIONS
10001 Richmond Avenue
IP Administration Center of Excellence
HOUSTON, TX 77042
EXAMINER
ANDERSON, LYNNE D
ART UNIT PAPER NUMBER
2862
NOTIFICATION DATE DELIVERY MODE
02/14/2018 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
U S Docketing @ sib. com
jalverson@slb.com
SMarckesoni@slb.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte VICTOR AARRE
Appeal 2016-005811
Application 12/963,906
Technology Center 2800
Before MARKNAGUMO, GEORGE C. BEST, and LILAN REN,
Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 1 and 3—21 of Application
12/963,906 under 35U.S.C§ 101 as directed to patent-ineligible subject
matter. Final Act. (January 30, 2015). Appellant1 seeks reversal of these
rejections pursuant to 35 U.S.C. § 134(a). We have jurisdiction under
35U.S.C. §6.
For the reasons forth below, we affirm.
1 Schlumberger Technology Corporation is identified as the real party in
interest. Appeal Br. 2.
Appeal 2016-005811
Application 12/963,906
BACKGROUND
The ’906 Application describes methods for modeling a geological
reservoir. Spec. 12. As the Specification explains:
Conventional approaches to geological reservoir
modeling rely on three-dimensional Cartesian grids that can be
iterated over time (e.g., to provide a four-dimensional model).
A reservoir may spend hundreds of square kilometers and be
located climate is in depth. The expansive nature of a typical
oil reservoir brings various types of physical phenomena into
play. Such phenomenon may exhibit macroscale, microscale or
a combination of macro-and microscale behavior. However,
attempts to capture microscale phenomena via increased grid
density or grid densities causes an increase in computational
and other resource requirements. For example, increasing two-
dimensional grid density by decreasing grid spacing from 10
meters by 10 meters to 5 meters by 5 meters will increase
computational requirements significantly (e.g., a four-fold
increase). Accordingly, most conventional models sacrifice
microscale accuracy to maintain reasonable resource
requirements. Various techniques described [in the ’906
Application’s Specification] can allow for more accurate
modeling of microscale phenomena (e.g., one meter resolution
or less) without necessarily increasing grid density.
Id. 11.
Claims 1 and 13 are representative of the ’906 Application’s claims
and are reproduced below from the Claims Appendix to the Appeal Brief:
1. One or more computer-readable non-transitory media
comprising computer-executable instructions stored therein to
instruct a computing system to:
for a given time, solve the elastic wave equation in
tensorial form for a geological reservoir model of a geological
reservoir subject to stated conditions to provide a solution that
comprises strain-related displacements associated with resource
production from the geological reservoir; and
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adjust a grid associated with the geological reservoir
model based at least in part on the strain-related displacements.
Appeal Br. 16.
13. A method comprising:
providing a geological reservoir model that comprises a
Cartesian grid;
solving the elastic wave equation in tensorial form for at
least a portion of the geological reservoir model subject to
certain conditions using a computing device to provide one or
more oh displacements; and
adjusting the Cartesian grid based at least in part on the
one or more displacements.
Id. at 18.
Claim 19, the third independent claim on appeal, is directed to a
computing system configured to carry out the method set forth in claim 13.
REJECTION
Claims 1 and 3—21 are rejected under 35U.S.C. § 101 as directed to
patent-ineligible subject matter. Final Act. 2.
DISCUSSION
As defined by the Patent Act, patent-eligible subject matter includes
“any new and useful process, machine, manufacture, or composition of
matter, or any new and useful improvement thereof.” 35 U.S.C. § 101. The
courts have created certain exceptions to the literal scope of § 101. In
particular, laws of nature, natural phenomena, and abstract ideas are not
patent-eligible. Alice Corp. v. CLSBankInt’l, 134 S. Ct. 2347, 2354 (2014).
Since Alice, patent-eligibility has been determined using a two-step
process. In step one, we determine whether the claims at issue are directed
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to a judicial exception, such as an abstract idea. Alice, 134 S. Ct. at 2355. If
the claims are not directed to one of the judicial exceptions, the inquiry ends.
See Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1339 (Fed. Cir. 2016).
If the claims are held to be directed to one of the judicial exceptions, we
proceed to step two. In this step, we determine whether the claims contain
“an ‘inventive concept’ . . . that is ‘sufficient to ensure that the patent in
practice amounts to significantly more than a patent upon the [ineligible
concept] itself.’” Alice, 134 S. Ct. at 2355 (quoting Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72—73 (2012)) (alteration in
original, emphasis added).
The Examiner rejected claims 1 and 3—21 of the ’906 Application as
directed to patent-ineligible subject matter. Final Act. 2—5. Appellant
divides the claims on appeal into eight different groups. See Appeal Br. 5—
14. We address Appellant’s arguments with respect to each group of claims
in turn.
Claim 1. In rejecting claim 1, the Examiner found that the claim is
directed to the abstract idea of adjusting a mathematical model of a
geological reservoir. Final Act. 2. The Examiner further found that claim 1,
which is specifically directed to “[o]ne or more computer-readable non-
transitory media comprising computer-executable instructions,” did not
include additional elements sufficient to transform the abstract idea into
patentable subject matter. Id. at 2—3. Thus, the Examiner concluded that the
subject matter of claim 1 is within the scope of the judicially-created
exception that places abstract ideas outside of the scope of patent-eligible
subject matter.
Appellant argues that the Examiner erred by finding that claim 1 is
directed to an abstract idea and, therefore, does not satisfy Alice step one. In
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particular, Appellant contends that the subject matter of claim 1 is patent-
eligible because it is directed to the use of mathematics to describe a
physical, real-world phenomenon. Appeal Br. 8—10 (citing Diamond v.
Diehr, 450 U.S. 175 (1981); Research Corp. Tech., Inc. v. Microsoft Corp.,
627 F.3d 859 (Fed. Cir. 2010); distinguishing Parker v. Flook, 437 U.S. 584
(1978)).
We are not persuaded by this argument.
We begin Alice step one by noting that claim 1 is a claim to a
computer readable medium containing program instruction for computer to
perform a particular process. Such claims—often referred to as Beauregard
claims after In re Beauregard, 53 F.3d 1583 (Fed. Cir. 1995)—are treated as
process claims for the purpose of step 1 of the Alice test. CyberSource
Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011)
(“[Djespite its Beauregard claim format,... we treat claim 2 as a process
claim for patent-eligibility purposes.”).
Considered as a process claim, the ’906 Application’s claim 1 is
directed to a process for manipulating a mathematical model of a geological
reservoir as it evolves over time. We, therefore, agree with the Examiner
that claim 1 is directed to an abstract idea rather than a physical, real-world
phenomenon. See Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350,
1353—54 (Fed. Cir. 2016) (“[W]e have treated analyzing information by
steps people go through in their minds, or by mathematical algorithms,
without more, as essentially mental processes within the abstract-idea
category.”).
Appellant argues that the Federal Circuit’s decision in Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016), compels a different answer
to this question. See Reply Brief 2.
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In Enfish, the claims were “directed to an innovative logical model for
a computer database.” Id. at 1330. The logical model was said to provide
multiple benefits, including an indexing technique that allowed for faster
searching of data than would be possible in a conventional relational
database, the more effective storage of data other than structured text, and
flexibility in database configuration. Id. at 1333. The claims at issue in
Enfish were directed to a specific improvement in the way computers
operate as embodied in the logical model. Id. at 1336. For example, one of
the claims at issue was directed to a particular configuration of a computer
system’s memory. See id. (quoting claim 17 of U.S. 6,151,604).
Appellant contends that claim 1 resembles the claims at issue in
Enfish because the modeling method described in the ’906 Application’s
Specification conserves computational resources. See Reply Br. 6—8.
This argument is not persuasive.
First, we note that Federal Circuit has explained that “any given
analysis in a § 101 ‘abstract idea’ case is hardly a clear guidepost for future
cases arising under § 101—each case stands on its own, and requires
separate analysis by the judges who must make the decision.” Versata Dev.
Group, Inc. v. SAP Am., Inc. 793 F.3d 1306, 1336 (Fed. Cir. 2015).
Second, an examination of Federal Circuit decisions demonstrates that
the subject matter of claim 1 does not conserve computational resources in a
manner that renders the subject matter patent-eligible rather than a patent-in
eligible abstract idea. As the Federal Circuit explained, the relevant question
to ask regarding claims directed to software is “whether the claims are
directed to an improvement to computer functionality versus being directed
to an abstract idea.” Enfish, 822 F.3d at 1335.
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In Enfish, the claims at issue were directed to “a specific type of data
structure designed to improve the way a computer stores and retrieve data in
memory.” Enfish, 822 F.3d at 1339. The Federal Circuit concluded that the
claims in Enfish were not directed to an abstract idea because “the plain
focus of the claims is on an improvement to computer functionality itself,
not on economic or other tasks for which a computer is used in its ordinary
capacity.” Id. at 1336.
In this case, however, the plain focus of the subject matter of claim 1
is on the abstract idea of mathematical modeling of geological reservoirs.
Any conservation of computational resources that occurs results from the
model’s design and is not due to any improvements in the way the computer
used to carry out the modeling functions. In this way, claim 1 is similar to
the claims that the Federal Circuit has concluded were directed to abstract
ideas. See, e.g., Elec. Power Grp., 830 F.3d at 1354 (finding claims directed
to an abstract idea because “the focus of the claimed and not on such an
improvement in computers as tools, but uncertain independently abstract
ideas that use computers as tools.”).
For the reasons set forth above, we conclude that claim 1 is directed to
an abstract idea. Thus, we proceed to Alice step two.
We also are unpersuaded that the Examiner erred by determining that
claim 1 fails Alice step two. In particular, the Examiner concluded that
claim 1 lacks a sufficient inventive concept to transform the abstract idea
into patent-eligible subject matter. See Answer 7—19.
In Alice step two, we consider the elements of the claim, both
individually and as an ordered combination, to assess whether the good
additional elements transform the nature of the claim into patent-eligible
subject matter. Content Extraction & Transmission LLC v. Wells Fargo
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Bank, 776 F.3d 1343, 1347 (Fed. Cir. 2014). “To save a patent at step two,
an inventive concept must be evident in the claims.” RecogniCorp, LLC v.
Nintendo Co., 855 F.3d 1322, 1327 (Fed. Cir. 2017). “An inventive concept
the transforms the abstract idea into a patent-eligible invention must be
significantly more than the abstract idea itself, and cannot simply be an
instruction to implement or apply the abstract idea on a computer.” Bascom
Global Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1349
(Fed. Cir. 2016).
The Examiner stated:
Taking all the additional claim elements individually, and in
combination, the claim as a whole does not amount to
significantly more than the abstract idea of adjusting a model
by using realistic test data to see how a reservoir may change
over time. . . . Thus, the claim does not amount to significantly
more than the judicial exception itself.
Answer 7. We agree with the Examiner.
As the Examiner explains, claim 1 of the ’906 Application is
distinguishable from the claims at issue in Research Corp. Technologies v.
Microsoft Corp., 627 F.3d 859 (Fed. Cir. 2010). Viewed as a process claim,
claim 1 of the ’906 Application is an abstract idea not limited to the
computer environment, nor is it directed to an innovation in computer
technology.
In sum, claim 1 of the ’906 Application encompasses the use of
known mathematical algorithms to model the evolution of a geological
reservoir as a function of time. Such claims are not directed to patent-
eligible subject matter. We, therefore, affirm the rejection of claim 1 as not
directed to patentable subject matter.
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Claims 3—10 and 21. In the Appeal Brief, Appellant argues that the
rejection of claims 3—10 and 21 should be reversed because these claims
“are patent-eligible for at least the same reasons as claim 1.” Appeal Br. 11.
For the reasons set forth above, we have affirmed the rejection of claim 1.
Thus, this argument is not persuasive.
Appellant further argues that “the record of the Office is lacking as to
reasons why dependent claims 3—10 and 21 are rejected under 35 U.S.C.
§ 101.” Id. Citing 37 C.F.R. § 1.104(b), Appellant argues that the rejection
of these claims should be reversed for this reason. Id. at 11—12.
The Examiner responds that the Final Action complied with Rule 104.
In particular, the Examiner points to the statement that “[t]he additional
recited limitations of dependent claims 3—12 and 21 fail to establish that the
claims are not directed to an abstract idea. Following the same reasoning
given above, claims 3—12 and 21 are also held to be ineligible under 35 USC
[§] 101.” Final Act. 3.
We agree with the Examiner that the Final Action contains a sufficient
explanation of the reasons for the rejection of claims 3—10 and 21. Thus, we
are not persuaded to reverse the rejection of these claims for failure to
comply with Rule 104.
Finally, Appellant’s Reply Brief contains, for the first time, specific
arguments tied to the limitations recited in claims 3—5 and 21. Reply Br. 9.
These arguments are untimely. We, therefore, refuse to entertain them. Ex
parte Nakashima, 93 USPQ2d 1834 (BPAI2010) (informative) (explaining
that arguments and evidence not timely presented in the principal Brief will
not be considered when filed in a Reply Brief, absent a showing of good
cause explaining why the argument could not have been presented in the
Principal Brief); Ex parte Borden, 93 USPQ2d 1473, 1477 (BPAI 2010)
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(informative) (“Properly interpreted, the Rules do not require the Board to
take up a belated argument that has not been addressed by the Examiner,
absent a showing of good cause.”).
Claims 11 and 12. Appellant’s Appeal Brief reproduces portions of
the limitations in dependent claims 11 and 12. Appeal Br. 12. This is an
insufficient basis for reversal. See 37 C.F.R. § 41.37(c)(l)(iv) (“A statement
which merely points out what a claim recites will not be considered an
argument for separate patentability of the claim.”).
Appellant also argues that the rejection of claims 11 and 12 should be
reversed for at least the same reasons as claim 1. Appeal Br. 12. As
discussed above, we have affirmed the rejection of claim 1. Thus, we do not
reverse the rejection of claims 11 and 12 for this reason.
Appellant further argues that the Final Action failed to comply with
the Rule 104 and that the rejection of claims 11 and 12 should be reversed
for this reason. Id. As we discussed in connection with claims 3—10 and 21
above, the Final Action contains a sufficient statement of the reasons for the
rejection of claims 11 and 12. Thus, we do not reverse the rejection of
claims 11 and 12 for this reason.
Finally, the Reply Brief contains new arguments for the reversal of the
rejection of claims 11 and 12. See Reply Br. 9—10. These arguments are
untimely and we do not consider them.
Claim 13. Claim 13 is an independent process claim. As we
discussed above, claim 1—a Beauregard claim—is analyzed as if it were a
process claim for purposes of the Alice analysis. The process limitations
recited in claim 1 are substantially the same as the process limitations set
forth in claim 13.
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Thus, we affirm the rejection of claim 13 as directed to patent-
ineligible subject matter for the same reasons we affirmed the rejection of
claim 1 on this basis.
Claims 14^-16. Appellant’s Appeal Brief reproduces portions of the
limitations in dependent claims 14—16. Appeal Br. 13. This is an
insufficient basis for reversal. 37 C.F.R. § 41.37(c)(l)(iv).
Appellant also argues that the rejection of claims 14—16 should be
reversed for at least the same reasons as claim 13. Appeal Br. 13. As
discussed above, we have affirmed the rejection of claim 13. Thus, we do
not reverse the rejection of claims 14—16 for this reason.
Appellant further argues that the Final Action failed to comply with
the Rule 104 and that the rejection of claims 14—16 should be reversed for
this reason. Id. The Final Action contains a sufficient statement of the
reasons for the rejection of claims 14—16. See Final Act. 4. Thus, we do not
reverse the rejection of claims 14—16 for this reason.
Finally, the Reply Brief contains a new argument with respect to the
rejection of claim 14. See Reply Br. 10. For the reasons discussed above,
we will not consider this argument.
Claims 17 and 18. Appellant argues that the rejection of claims 17
and 18 should be reversed for at least the same reasons as claim 13. Appeal
Br. 13. As discussed above, we have affirmed the rejection of claim 13.
Thus, we do not reverse the rejection of claims 14—16 for this reason.
Appellant further argues that the Final Action failed to comply with
the Rule 104 and that the rejection of claims 14—16 should be reversed for
this reason. Id. at 13—14. The Final Action contains a sufficient statement
of the reasons for the rejection of claims 14—16. See Final Act. 4. Thus, we
do not reverse the rejection of claims 14—16 for this reason.
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Claim 19. Independent claim 19 is reproduced below:
19. A computing device comprising:
one or more processors;
memory operatively coupled to the one or more
processors; and
modules stored in the memory that comprise processor-
executable instructions configured to
for a given time, solve the elastic wave equation in
tensorial form for a geological reservoir model subject to stated
conditions;
adjust a grid associated with the geological
reservoir model based on [the2] solution of the elastic wave
equation in tensorial form for the given time; and
increment the given time.
Appeal Br. 19-20.
As can be seen, claim 19 is directed to a computing device comprising
generic, standard components. The claimed computing device is
programmed to carry out a process that is substantially the same as that
recited in claims 1 and 13. For the reasons set forth in our discussion of
those claims, we have concluded that they are directed to patent-ineligible
subject matter. We, therefore, conclude that claim 19 also is directed to
patent-ineligible subject matter. See Two-Way Media Ltd. v. Comcast Cable
Commc’ns, LLC, 874 F.3d 1329, 1337 (Fed. Cir. 2017) (“Claims directed to
generalized steps to be performed on a computer using conventional
computer activity are not patent eligible.”); Bancorp Servs., LLC v. Sun Life
2 We assume that the omission of the article “the” is inadvertent. If
prosecution of the ’906 Application continues, we respectfully suggest that
this apparent oversight be corrected.
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Assur. Co. of Canada (US), 687 F.3d 1266, 1279 (Fed. Cir. 2012) (“Using a
computer to accelerate an ineligible mental process does not make that
process patent-eligible.”).
We, therefore, affirm the rejection of claim 19.
Claim 20. Appellant argues that the rejection of claim 20 should be
reversed for at least the same reasons as claim 19. Appeal Br. 14. As
discussed above, we have affirmed the rejection of claim 19. Thus, we do
not reverse the rejection of claim 20 for this reason.
Appellant further argues that the Final Action failed to comply with
the Rule 104 and that the rejection of claim 20 should be reversed for this
reason. Id. The Final Action contains a sufficient statement of the reasons
for the rejection of claim 20. See Final Act. 4. Thus, we do not reverse the
rejection of claim 20 for this reason.
CONCLUSION
For the reasons set forth above, we affirm the rejection of claims 1,
and 3—21 as being directed to patent-in eligible subject matter.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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